Property, intangible

a blog about ownership of intellectual property rights and its licensing

  • A Garden is Not Copyrightable

    The Clannco Art+Law blog gives us a thorough summary of a Visual Artists Rights Act case out of the 7th Circuit. The court, clearly troubled by the fact that most everyone would consider the work in question a “garden,”

    held that the work was  
    neither “authored” nor “fixed” in the senses required for copyright.
    Simply put, gardens are planted and cultivated, not authored. A garden’s constituent elements are alive and inherently changeable, not fixed. Most of what we see and experience in a garden—the colors, shapes, textures, and scents of the plants—originates in nature, not in the mind of the gardener. At any given moment in time, a garden owes most of its form and appearance to natural forces, though the gardener who plants and tends it obviously assists. All this is true of Wildflower Works, even though it was designed and planted by an artist. 
    Of course, a human “author”—whether an artist, a professional landscape designer, or an amateur backyard gardener—determines the initial arrangement of the plants in a garden. This is not the kind of authorship required for copyright. To the extent that seeds or seedlings can be considered a “medium of expression,” they originate in nature, and natural forces—not the intellect of the gardener—determine their form, growth, and appearance. Moreover, a garden is simply too changeable to satisfy the primary purpose of fixation; its appearance is too inherently variable to supply a baseline for determining questions of copyright creation and infringement. If a garden can qualify as a “work of authorship” sufficiently “embodied in a copy,” at what point has fixation occurred? When the garden is newly planted? When its first blossoms appear? When it is in full bloom? How—and at what point in time—is a court to determine whether infringing copying has occurred?
    That strikes me as a whole lot of words, but not much substance explaining why a work made of plants can’t be original or fixed other than “they grow.”  Many works of art change over time, like the examples given by Kelley in the decision.
    Less problematic for me was the court’s opinion that the work did not fit into the statutory categories of “painting” or “sculpture” as required by VARA, citing to dictionary definitions for those categories. The problem for the Chicago Park District was, though, that the court’s discussion was all dicta – the Chicago Park District never challenged the district court’s decision that the work was indeed either a “painting” or “sculpture.”
    An interesting decision on a rarely explored statute.
    Kelley v. Chicago Park District, Nos. 08-3701 & 08-3712 (7th Cir. Feb. 15, 2011)

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  • Assignment of a Patent’s Priority Right

    The IPKat explains it.  Aye-yigh-yigh.  You figure it out.

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  • Beware the “Own Name” Defense

    Lawsuits in the United States over use of personal names come up occasionally.  They happen when someone doing business under his or her own name sells off the rights, then try to compete in the original field using some form of the name (I think this is called “having one’s cake and eating it too”).  The Joseph Abboud case is a well-known one, but it happens fairly frequently.  In the U.S., sorting it out generally involves analysis of the transactional documents.

    In Europe, though, there’s another wrinkle, which is the “own name” defense.  A trademark is invalid if:

    the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:

    (a) a right to a name;
    (b) a right of personal portrayal;
    (c) a copyright;
    (d) an industrial property right;

    under the Community legislation or national law governing the protection.
    Article 52(2) of Regulation No 40/94 (now Article 53 of Regulation No 207/2009).

    In Italy, the Industrial Property Code provides a right of registration to “personal names, signs used in the artistic, literary, scientific, political or sporting fields, the designations and acronyms of events and those of non-profit making bodies and associations, including their characteristic emblems . . if they are well known . . . .”

    The problem came up after fashion designer Elio Fiorucci sold his financially distressed company to the Japanese company Edwin Co., Ltd.  The conveyance was of:

    (i) trade marks wherever registered, or trade marks for which registration has been sought in any part of the world whatsoever, and all patents, ornamental and utility models and all other distinctive signs belonging to the company Fiorucci as listed in the annex to this contract …

    – (iv) all the rights exclusively to use the designation “FIORUCCI” and exclusively to manufacture and sell the clothes and other goods bearing the name “FIORUCCI”.
    Edwin then filed an application to register the mark ELIO FIORUCCI, which was granted in 1999.  Mr. Fiorucci filed an application to revoke the trademark and for a declaration of invalidity in 2003.  The case has been winding its way through the administrative and court systems on its way to the European Court of Justice.  The decisions go back and forth on the scope and meaning of the “own name” defense in Italy, in part whether it can be relied on in cases where the name has commercial value (the IPKat gives the complicated blow-by-blow on the case here).  At the moment, the General Court has held that Mr. Fiorucci has an “own name” defense, but also did not cancel the trademark on the basis that Edwin’s claim that the ELIO FIORUCCI mark was included in the above assignment had not been decided by the OHIM Board of Appeals.
    The Advocate General just issued her opinion, a split decision that there was no legal error so Edwin’s appeal should be dismissed, but also that Mr. Fiorucci’s appeal was without legal basis.  The European Court of Justice will now decide.

    I would love to hear from European practitioners more about the “own name” defense.  Is the biggest problem in the Edwin case that the personal name issue wasn’t specifically addressed in the assignment agreement?  If the contract had been for the use of “FIORUCCI and any confusingly similar names, including ELIO FIORUCCI,” would there have been a suit?  How far does the “own name” defense go?

    But a reminder to U.S. practitioners that, when dealing with a trademark that is a personal name, be sure to very specifically address to what extent the individual may use his or her personal name in future business.

    Edwin’s Fiorucci site here.

    Fiorucci poster art here.

    Edwin Co. Ltd., Case C-263/09 P (Advocate General’s opinion top link)

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  • Grateful for Your Help!

    If you’re a procrastinator like me, you’ve been planning on sending me an affidavit about the distinctiveness of the trademark for my blog.  Now’s the time though!  Original post here.

    Thanks for all those who have sent me something so far, and for those of you who plan to but haven’t gotten around to it yet.  I’m very appreciative.

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  • Is the Claim Time-Barred?

    So here are the facts:

    Business Resources Bureau, Inc. (BRB) was the publisher. Alan M. Schlein was the author. BRB hired Shirley Kwan, at Schlein’s request, to do 100 hours of editing. BRB told Kwan that she would “be given a credit or byline on the title page as editor on the project.” After the 100 hours was up, Schlein asked that Kwan be allowed to continue and she would be compensated based on royalty.

    When time came to publish the book in 1998, these emails were exchanged:

    BRB to Kwan and Schlien (Dec. 14): “On cover, we were planning to put both names–AMS [Schlein] and SKK [Kwan] … Alan has brought it up that he may want something different. Need to have the two of you to agree on how you want your names listed
    AMS and SKK
    AMS with SKK
    ? ? ? ? need to know this week”
    Schlein to BRB, but not Kwan (Dec. 14): “As we discussed, I want the authorship to read as follows By Alan M. Schlein Edited by Shirley…. If this is not the way you plan to do the book I would like to talk to you about it immediately!! Please contact me ASAP Tuesday if you have any plans otherwise. Your offering a co-authorship to Shirley has put me in an awkward position. She was brought in as a contract editor, and while I appreciate all her significant efforts, it was her and my agreement to have her listed as an editor.”
    Kwan to BRB (Dec. 15): “After due consideration, I’ve decided to request the following title credit: by Alan Schlein with Shirley Kwan Kisaichi,” because “[e]ssentially, I have ghostwritten this book.”
    The book was published in 1999 with Schlien listed as author and Kwan as editor.  The second edition was also published in 1999.  On May 23, 2002, Kwan was told she would not get royalties on the third edition because the book had been “completely rewritten.”  The third and fourth editions were published in July, 2002 and August, 2004.

    On January 14, 2005 Kwan filed a lawsuit alleging that BRB infringed her copyright in the book.  The question on summary judgment was statute of limitations, which is three years.  For a claim of copyright ownership, the statute begins to run when “a reasonably diligent plaintiff would have been put on inquiry as to the existence of a right.”  For an infringement claim, the statute of limitations bars only recovery for infringing acts outside the three-year period.  But, where the ownership claim is dispositive, if the ownership claim is time-barred then the infringement claim is time-barred.

    So what happens here?  Is the ownership claim time-barred?  When did Kwan have notice that BRB didn’t believe she was an author as the term is used in the Copyright Act?

    The court thought that the above emails were notice to Kwan that copyright ownership was disputed. I’m not so sure, though. Characterization of one as “author” or “editor” isn’t necessarily determinative of copyright ownership. The court described the working relationship thus: “Schlein would prepare first drafts of FIOL chapters and send them to Kwan for editing. Kwan would comment on these chapters and then return them to Schlein for further work. After Schlein had revised the chapters based upon Kwan’s comments, he would return them to her for a second round of editing.” Certainly Kwan could have thought this was enough to make her a joint author. There’s no mention whether Kwan edited the second edition, but she was getting royalty payments for it.  All this sounds like it was reasonable for Kwan to think that no one disputed she was a joint author, albeit one called “editor” on the book cover, until they refused to pay her for royalties on a subsequent revision to the work.
    But no matter; the Second Circuit has spoken.

    Kwan v. Schlein, No 09-5205-cv (2d Cir. Jan.. 25, 2011)

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  • Don’t Forget Trade Dress In Your Manufacturing Agreements

    Tecnimed SRL v Kidz-Med, Inc. is a manufacturer-distributor dispute with a bit of a twist – the agreement was clear about who owned the trademark (the manufacturer), but it didn’t address who owned the trade dress for the product.

    Tecnimed is an Italian company that makes a non-contact thermometer for taking a child’s temperature.  Kidz-Med was its U.S. distributor, but the relationship fell apart. Kidz-Med was allowed to sell off its remaining stock but had bigger plans in mind. It also started selling its own competing thermometer, selling it in similar packaging. The two sets of packaging are shown below:

    Original packaging

    Distributor’s later packaging

    Kidz-Med claimed that it had created the trade dress for the packaging and therefore owned it.  On a motion for preliminary injunction, the court used the Wrist-Rocket and Sengoku factors to decide who owned the trade dress. Their agreement was no help; it didn’t address trade dress. In the absence of an agreement the manufacturer is presumed to own the mark, which can be rebutted by considering four factors: “(1) which party invented and first affixed the mark onto the product; (2) which party’s name appeared with the trademark; (3) which party maintained the qualify and uniformity of the product; and (4) with which party the public identified the product and to whom purchasers made complaints.”

    For the first factor, Tecnimed showed that it was using components of the trade dress – the color scheme, the phrase “5 in 1,” the photo of a mother holding a sleeping baby, and some illustrations – before Kidz-Med became its distributor. This factor to Tecnimed.

    Both parties had their marks on the packaging, the Kidz-Med mark in the bottom left corner and Tecnimed’s “ThermoFocus” mark at the top. “Accordingly, the trade dress is closely associated with ‘Thermofocus,’ and by extension with Thermofocus’s manufacturer and trademark registrant.” Nevertheless, Tecnimed’s name was not on the packaging, so this factor was a tie.

    For the third factor, Tecnimed manufactured the thermometers, so controlled the quality of the goods. Kidz-Med, though, handled consumer complaints, so won on the fourth factor.  Tallying up, score two for Tecnimed, one for Kidz-Med, and one a draw.  That wasn’t enough for Kidz-Med to overcome the presumption and Technimed is the owner of the trade dress, which is also inherently distinctive.

    But do you consider the two trade dresses likely to be confused?  How about, though, if you consider that Kidz-Med started out by reverse passing off the ThermoFocus thermometer as the “Kidz-Med 5 in 1 Non-Contact Thermometer,” used testimonials about the ThermoFocus thermometer to promote it, and then used the misdirection to pave the way for its own replacement thermometer:

    In a January 2010 press release concerning the Thermofocus, Kidz-Med’s Director of Business Development falsely suggested that Kidz-Med was planning to release an updated version of the Thermofocus, by stating that “[w]e are excited to see that the media A-list are featuring our non-contact, hygienic thermometer [the Thermofocus] as a must-have during the flu season. Our new noncontact thermometer will be launching this year, and we hope for similar attention to be drawn to it too.”

    Polaroid factors applied and Tecnimed ends up with the winning tally – “bad faith” alone might have been enough.

    Tecnimed SRL v. Kidz-Med, Inc., No. 10 Civ. 7277 (S.D.N.Y. Jan. 18, 2011).

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  • Confirmed – X/Open Owns the UNIX Trademark

    I previously blogged about a case where there was a challenge to the ownership of the UNIX trademark. The decision has now been affirmed in an unpublished decision by the 11th Circuit.

    The UNIX mark was owned by Novell, but Novell decided to first license, then assign the mark to X/Open, a technology consortium.  Novell had used the mark for computer code and licensed it for use on products running the UNIX code.  X/Open was to license the mark, not based on use of the source code, but based on the products’ conformity to specifications. In three years, X/Open would ultimately become the owner of the trademark. It’s a messy set of transactional documents, but I think construed correctly.

    First, in the Novell to X/Open Licensing Agreement, Novell granted X/Open an “exclusive, perpetual, irrevocable license to use, and sub-license to third parties the use of,” the UNIX trademark, with assignment to X/Open after three years’ time.

    Next, Novell sold certain assets to The SCO Group, Inc. The Asset Purchase Agreement transferred “all rights and ownership of UNIX and UNIXWARE,”* including, “without limitation,” the “trademarks UNIX and UNIXWARE as and to the extent held by [Novell] (excluding any compensation [Novell] receives with respect of the license granted to X/Open regarding the UNIX trademark).”

    Next we have the Confirmation Agreement.  Novell, X/Open and SCO jointly executed an agreement regarding the UNIX trademark.  The agreement “provided for the acceleration of the vesting of title in X/Open to the UNIX trademark, and the assignment to SCO of Novell’s rights under the Licensing Agreement.”  Novell was to assign the mark “as soon as possible,” which would not be a breach of Novell’s obligations to SCO under the APA. The agreement also stated that the APA was subject to the rights and obligations of the X/Open Licensing Agreement.

    After the Confirmation Agreement was executed, Novell and SCO amended the Asset Purchase Agreement.  The amendment clarified that Novell was assigning to SCO the UNIX and UNIXWARE trademarks “required for SCO to exercise its rights with respect to the acquisition of UNIX and UNIXWARE technologies.”

    Finally is the Deed of Assignment, where Novell assigned “all property, right, title and interest in the [UNIX] trademarks with the business and goodwill attached to the said marks.”

    Plaintiff Gray had filed an application for the mark “iNux,” which was opposed by X/Open.  Gray responded by filing a complaint in the Middle District of Florida, claiming that Novell had transferred ownership to SCO not X/Open, making X/Open’s opposition fraudulent. It boiled down to this:

    The linchpin of Gray’s complaint is his allegation that X/Open is not the true owner of the UNIX mark. He claims that Novell did not grant X/Open an exclusive license to the UNIX mark. According to Gray, Novell instead transferred ownership of this mark to SCO via the APA; and ever since, the three Defendants — X/Open, Novell, and SCO — have conspired to conceal the mark’s true owner. If Gray is mistaken about the ownership of the UNIX mark, all of his claims must fail; nothing would be fraudulent in X/Open representing itself as the UNIX mark’s owner, nor would there be fraud attributable to Novell or SCO. Gray is mistaken.

    The court found that, by virtue of its exclusive licensing arrangement with Novell, X/Open was the owner of the mark.  (A minor problem – all those oppositions Novell, not X/Open, filed after this point in time. The court disposed of it in a footnote on the theory that, under Section 13 of the Lanham Act, 15 U.S.C. § 1063, Novell didn’t have to be an owner to file an opposition.)  You be the judge how exclusive the license is; the agreement is here.

    The Asset Purchase Agreement only assigned the UNIX mark to SCO “to the extent held” by Novell. Since Novell didn’t “hold” the UNIX mark, it therefore couldn’t have assigned it to SCO. The court noted that Novell’s retention of royalties from the X/Open licensing arrangement showed that the APA was reached in contemplation of the Licensing Agreement, a point reinforced by the Confirmation Agreement’s references to the License Agreement also.  The court was puzzled by the Confirmation Agreement but rolled with the punches:

    Given that the APA had not altered Novell’s obligations under the Licensing Agreement in the first place,[**] it is not clear that Novell and SCO needed to modify the APA — but they certainly had the right to do so under California law.  Accordingly, we conclude that the Confirmation Agreement reaffirmed that Novell would be assigning ownership of the UNIX mark to X/Open.

    The post-Confirmation Agreement amendment to the APA — excluding all trademarks from the transfer except those SCO “require[d]” — supported the conclusion that X/Open owned the mark, since SCO did not need the UNIX mark to carry out the business it acquired, rather X/Open did. Finally, the Deed of Assignment effected change in legal ownership. With that, X/Open was the owner of the marks and Gray had no case left.

    Gray v. Novell, Inc., No. 09-11374 (11th Cir. Jan. 7, 2011).

    *UNIXWARE was a product business that was not part of the X/Open licensing arrangement.
    **Hindsight’s 20/20.

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  • Who’s the Baddest Chicks?

    (click to enlarge)

    You’re an administrative judge with the TTAB.  The entity with the logo second from the left on the bottom of the poster owns a registration for “ATL’s Baddest Chicks.” The entity with the logo on the left, the domain name “www.littelconcepts.net” and the phone number 404-607-8772 claims to be the owner of the mark. This is the only piece of evidence in the case. Who wins? Answer here  (it’s a no-brainer – mostly a lesson in why one needs a thing called “evidence”).

    Practice note:  There is a lovely summary of the elements of a claim that an application was fraudulent because there was a senior mark: “the party alleging fraud must plead and prove that: (1) there was in fact another user (petitioner, here) of the same or a confusingly similar mark at the time the oath was signed; (2) the other user had legal rights superior to applicant’s; (3) applicant knew that the other user had rights in the mark superior to applicant’s, and either believed that a likelihood of confusion would result from applicant’s use of its mark or had no reasonable basis for believing otherwise; and that (4) applicant, in failing to disclose these facts to the Patent and Trademark Office, intended to procure a registration to which it was not entitled.”

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  • Too Many Cupcakeries

    Ryan Gile at the Las Vegas Trademark Attorney does a fabulous job summarizing a new suit over ownership of THE CUPCAKERY trademark – it’s my favorite kind, a family feud.  Is the REAL Cupcakery here – or here??

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  • Your Help Needed!

    So, I filed an application to register the name of my blog.  I was refused registration, twice, under Section 2(e) on the basis that the name of the blog is merely descriptive. I heartily disagree, but there I am, with a final refusal.

    So I’m taking a page from John Welch’s playbook (although without any floating key chain to bribe you with – Fedora 14 anyone???) and asking for your help to show that the name of my blog has acquired distinctiveness.  If you agree that it has, please send me an email (propertyintangible@gmail.com) identifying yourself, stating your experience/employment, and setting forth your view on whether PROPERTY, INTANGIBLE functions as an indicator of source for the services “On-line journals, namely, blogs featuring information on intellectual property law.”  I will be submitting the messages in my response/request for reconsideration.  If you’re so inclined, you can also add the following statement:
    “The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, declares that all statements made of my own knowledge are true and that all statements made on information and belief are believed to be true.”

    More info on declarations to show acquired distinctiveness here. 

    Thanks for the help!

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